US Trademark Amendment Act Will Provide New Procedures for Challenging Use Claims

The Trademark Modernisation Act 2020 has the focus of improving the accuracy and integrity of the register and seeks to achieve this through new procedures for challenging inaccurate claims of use in applications and registrations.

The Act was signed into law on 27th December 2020 and will be implemented by and take effect on 27th December 2021 unless indicated otherwise below.

New Ex-Parte Proceedings for Removal or Re-Examination
Third-parties (or the USPTO Director) will be able to institute proceedings to have a registration removed or re-examined on the basis that it has either never been used in commerce or was not used before a particular relevant date. Such petitions need to establish a prima facie basis for the allegation and be supplemented with evidence to the effect that reasonable investigations were conducted to determine whether the trademark has been used in commerce.

For the removal action a non-use allegation in respect of some of all of the goods or services needs to be made within the period of 3 to 10-years after the registration date. It will also be possible to file this allegation directly with the TTAB within the same period. The non-use re-examination procedure is used where the alleged non-use is in relation to a particular relevant date such as at the filing date if use in commerce was claimed, or, for applications filed on an intention to use basis, the date of an amendment to allege use or that the time period for filing a statement of use has expired. Such re-examination actions need to be made within 5-years from the registration date.

Where such petitions are granted the Director will require the registrant to respond with evidence of use or excusable non-use. If some or all of the challenged goods or services are removed the registrant will have a right of appeal to the TTAB. Where the USPTO determines that the trademark has been used in relation to some or all of the challenged goods or services those goods or services will be immune from new or further ex-parte removal or re-examination challenges.

Flexibility for Office Action Response Periods
The USPTO will have discretion to shorten the current six-month time limit for responding to an office action down to a minimum of 60-days. There will also be discretion as to the number and duration of extensions of time (up to the full 6-months) that can be granted, and these will be subject to extra fees.

Third-Party Submissions During Examination
Currently the USPTO allows third-parties to submit evidence prior to registration regarding a trademark’s registrability – known as letters of protest. The Act formalises this practice with effect from 2nd January 2021, making them subject to a $50 fee and requiring the USPTO to make a (non-reviewable) decision on whether to include the evidence in the application within 2-months from receipt. Such submissions need to specify the legislative provisions that the examiner needs to consider the evidence in relation to.

Rebuttable Presumption of Irreparable Harm
Where it is found that a trademark has been infringed or that there is a likelihood of success on the merits the trademark owner will now be entitled to a rebuttable presumption of irreparable harm if they are seeking injunctive relief. This will make it easier for trademark owners to enforce their rights in Federal Courts.

Author: Quinn Miller

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